USPTO Patents Application 09929184

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/929,184

08/14/2001

Scot D. Wilce

G08.002

1214

28062 7590 12/15/2006

BUCKLEY, MASCHOFF, TALWALKAR LLC
50 LOCUSTA VENUE
NEW CANAAN, CT 06840

EXAMINER

LIVERSEDGE, JENNIFER L

ART UNIT

PAPER NUMBER

3692

DATE MAILED: 12/15/2006

Please find below and/or attached an Office connnunication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Office Action Summary

Application No.

09/929.184

Applicant(s)

WILCE ET AL

Examiner

Jennifer Liversedge

Art Unit

3692

The MAILING DATE of this communication appears on the cover sheet with the correspondence address
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS.
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 . 1 36(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period wilt apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent temn adjustment. See 37 CFR 1.704(b).

Status

1 )S Responsive to conrinnunication(s) filed on 22 September 2006 .
2a)^ This action is FINAL. 2b)n This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11. 453 O.G. 213.

Disposition of Claims

4) S C!aim(s) 1 and 3-19 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) 0 Claim(s) is/are allowed.

6) ^ Claim(s) 1 and 3-19 is/are rejected.

7) n Claim(s) is/are objected to.

8) n Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) n The specification is objected to by the Examiner.

10)0 The drawing(s) filed on is/are: a)n accepted or b)^ objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).

Replacement drawing sheet(s) including the connection is required if the drawjng(s) is objected to. See 37 CFR 1.121(d).
1 1 )D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-1 52.

Priority under 35 U.S.C. § 11 9

12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)n All b)n Some * c)^ None of:

1 Certified copies of the priority documents have been received.

2. n Certified copies of the priority documents have been received in Application No. .

3. n Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) □ Notice of References Cited (PTO-892)

2) CD Notice of Draftsperson's Patent Drawing Review (PTO-948)

3) n Infomnation Disclosure Statement(s) (PTO/SB/08)

Paper No(s)/MaiI Date .

4) □ Interview Summary (PTO-413)

Paper No(s)/Mail Date. .

5) CH Notice of Informal Patent Application

6) □ Other: .

U.S. Patent and Tradeniark Office
PTOL-326 (Rev. 08-06)

Office Action Summary

Part of Paper No./Mail Date 20061206

Application/Control Number: 09/929,184 Page 2

Art Unit: 3692

DETAILED ACTION
Response to Amendment

This Office Action is responsive to Applicant's amendment and request for
reconsideration of application 09/929,184 filed on September 22, 2006.
The amendment contains original claims: 6-7, 9, 11 and 17-18.
The amendment contains amended claims: 1, 3-5, 8, 10, 12-16 and 19.
Claims 2 and 20-29 have been canceled.

Claim Rejections - 35 USC § 103

The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between the subject nnatter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1 , 148

USPQ 459 (1966). that are applied for establishing a background for determining

obviousness under 35 U.S.C. 103(a) are summarized as follows:

1 . Determining the scope and contents of the prior art.

2. Ascertaining the differences between the prior art and the claims at issue.

3. Resolving the level of ordinary skill in the pertinent art.

4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.

Claims 1 and 3-19 are rejected under 35 U.S.C. 103(a) as being unpatentable

over Pub. No. US 2002/0087534 A1 to Blackman et al. (further referred to as

Blackman), in view of Pub. No. US 2002/0188539 Al to Axelrad et al. (further referred

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Art Unit: 3692

to as Axelrad), and further in view of Advanced Perl programnning by Sriram Srinivasan
in 1997 (further referred to as Perl).

Regarding claims 1,16 and 19, Blackman discloses a method, apparatus and
medium storing instructions adapted to be executed by a processor to perform a
method for facilitating generation of an agreement document associated with a financial
transaction agreement between a party and a counter-party (page 1 , paragraphs 1 and
7), comprising:

A processor (page 2, paragraphs 12-13 and 38);

A storage device in communication with said processor and storing instructions
adapted to be executed by said processor to (page 3, paragraphs 40-47);

Receiving agreement information from a user associated with the party, the
agreement information including (i) a counter-party communication address (page 4,
paragraph 62);

Determining an agreement scope. 'a document scope, and a fact set scope (page
3, paragraph 40; page 11, paragraph 244);

Generating the agreement document in accordance with the information (page 1 ,
paragraph 7; page 3, paragraph 30; page 5, paragraphs 52 and 54);

Automatically transmitting the agreement document to the counter-party via the
counter-party communication address (page 3, paragraphs 40 and 47; page 4,
paragraph 62; page 10. paragraph 237).

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Art Unit: 3692

Blackman does not disclose information about a financial product associated with
the financial transaction agreement; and generating the agreement document in
accordance with information about the financial product and a covered products matrix.
However, Axelrad discloses information about a financial product associated with the
financial transaction agreement (page 2, paragraph 29; page 3, paragraphs 32 and 38);
and generating the agreement document in accordance with information about the
financial product and a covered products matrix (page 3, paragraph 30; page 5,
paragraphs 52 and 54). It would be obvious to one of ordinary skill in the art to modify
the agreement management system for financial transactions as disclosed by Blackman
to adapt the use of financial products and covered products matrix as disclosed by
Axelrad. The motivation would be that offering a financial product is one type of
financial transaction and Blackman contains the mechanisms for offering financial
transaction agreements between parties, whereby a financial product would be one of
many such possibilities of offerings.

Neither Blackman nor Axelrad disclose placing the determined agreement scope,
document scope, and fact scope in a scope stack and evaluating the scope stack via an
evaluation engine to produce a result in accordance with a rule. However. Perl
discloses placing the determined agreement scope, document scope, and fact scope in
a scope stack and evaluating the scope stack via an evaluation engine to produce a
result in accordance with a rule (page 3, lines 36-41). It would be obvious to one of
ordinary skill in the art to combine the use of scope stacks as disclosed by Perl with the
transaction agreement system as disclosed by Blackman and Axelrad. The motivation

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Art Unit: 3692

would be that the use of scope stacks are used to organize data related to scopes of
defined fields and to use them in relation to evaluating data which has been collected
and stored.

Regarding claim 3, Blackman discloses the method wherein the counter-party
communication address comprises at least one of: (i) an electronic mail address, (ii) an
Internet address, (iii) a uniform resource locator, and (v) a telephone number (page 4,
paragraph 62).

Regarding claim 4, Blackman discloses the method further comprising
automatically transmitting the agreement document via a communication address
associated with the party (page 3, paragraph 47; page 4, paragraph 62; page 10,
paragraph 237).

Regarding claim 5. Blackman discloses the method wherein the party is
associated with a first party entity and a second party entity (page 1, paragraph 7), and
further comprising:

Transmitting the agreement document via a first communication address
associated with the first party entity (page 2, paragraph 38; page 3, paragraph 47; page
4, paragraph 62);

Receiving information from the first party entity (page 1 , paragraph 7; page 3,
paragraph 47); and

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Transmitting the agreement document via a second communication address
associated with the second party entity (page 2, paragraph 38; page 3, paragraph 47;
page 4, paragraph 62; page 10, paragraph 237).

Regarding claim 6, Blackman discloses the method wherein the agreement
document comprises at least one of: (i) a final agreement document, and (ii) an
amendment to an existing agreement document (page 4, paragraphs 74-78; page 9,
paragraph 220; page 10, paragraphs 231 and 236-237).

Regarding claim 7, Blackman disclose the method wherein the agreement
document comprises a preliminary agreement document (page 1 , paragraph 7; page 3,
paragraph 47; page 11, paragraph 244).

Regarding claim 8, Blackman discloses the method wherein said transmitting
comprises automatically transmitting the preliminary agreement document via the
counter-party communication address associated with the counter-party (page 2,
paragraph 38; page 3, paragraph 47; page 4, paragraph 62), and further comprising
receiving a revised preliminary agreement from the counter-party (page 4, paragraph
70-71 and 72-78; page 14, paragraph 287; page 15, paragraph 305).

Regarding claim 9, Blacker discloses the method further comprising reconciling
the revised preliminary agreement document and the preliminary agreement document;

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and generating a final agreement document in accordance with said reconciliation (page
16, paragraph 331).

Regarding claim 10, Blackman discloses the method where said generating
comprises automatically generating a plurality of agreement documents in accordance
with the information (page 9, paragraph 220; page 10, paragraph 236).

Blackman does not disclose generating the agreement document in accordance
with information about the financial product and a covered products matrix. However,
Axelrad discloses generating the agreement document in accordance with information
about the financial product and a covered products matrix (page 3, paragraph 30; page
5, paragraphs 52 and 54). It would be obvious to one of ordinary skill in the art to
modify the agreement management system for financial transactions as disclosed by
Blackman to adapt the use of information regarding financial products and covered
products matrix as disclosed by Axelrad. The motivation would be that offering a
financial product is one type of financial transaction and Blackman contains the
mechanisms for offering financial transaction agreements between parties, whereby a
financial product would be one of many such possibilities of offerings.

Regarding claim 11, Blackman discloses the method wherein the agreement
information comprises at least one of: (i) an agreement type, (ii) an agreement term,
and (iii) an agreement fact (page 3, paragraph 40; page 4, paragraph 53; page 9,
paragraph 222).

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Page 8

Regarding claim 12, Blackman discloses the method wherein the agreement
comprises a transaction agreement associated with at least one of: (i) a set of rights
between the party and the counter-party, (ii) a legal contract, (iii) a financial instmment,
and (iv) a monetary amount (abstract; page 1, paragraph 9).

Regarding claims 13 and 14, Blackman does not disclose the method wherein
the financial product comprises at least one of: (i) an equity product, (ii) a stock product,
(iii) an index product, (iv) a fixed income product, (v) a bond product, (vi) a bank loan
product, (vii) a whole loan product, (viii) an interest rate product, (ix) a credit derivative
product, (x) a commodity product, (xi) a metal product, (xii) an energy product, and (xiii)
an agricultural product, and where at least one transaction instrument comprises: (i) a
swap instrument, (ii) an option instrument, (iii) a buy instrument, (iv) a sell instrument,
(v) a call instrument, (vi) a put instrument, (vii) a fonA/ard instrument, (viii) a pre-paid
forward instrument, (ix) a spot instrument, (x) a repurchase agreement instrument, (xi) a
loan instrument, (xii) a warrant instrument, and (xiii) a contract for differences
instrument.

However, Axelrad discloses the method wherein the financial product comprises
at least one of: (i) an equity product, (ii) a stock product, (iii) an index product, (iv) a
fixed income product, (v) a bond product, (vi) a bank loan product, (vii) a whole loan
product, (viii) an interest rate product, (ix) a credit derivative product, (x) a commodity
product, (xi) a metal product, (xii) an energy product, and (xiii) an agricultural product,

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and where at least one transaction instrument comprises: (i) a swap instrument, (ii) an
option instrument, (iii) a buy instrument, (iv) a sell instrument, (v) a call instrument, (vi) a
put instrument, (vii) a fonA^ard instrument, (viii) a pre-paid forward instrument, (ix) a spot
instrument, (x) a repurchase agreement instrument, (xi) a loan instmment, (xii) a
warrant instrument, and (xiii) a contract for differences instrument (pages 1-6).

It would be obvious to one of ordinary skill in the art to combine the financial
products and instmments as disclosed by Axelrad with the agreement system as
disclosed by Blackman. The motivation would be that transaction agreements would
include the trading of financial products and where financial instruments are to be
bought, sold, traded, etc, such that the impetus for developing an agreement would be
to facilitate such a transaction.

Regarding claim 15, Blackman discloses the method wherein said generating is
performed via at least one of: (i) a covered product matrix information retrieved from a
database, (ii) a pre-stored default transaction term, (iii) information received from a user
of an agreement modeling system, (iv) information received from a satellite system, and
(v) information received from a legacy agreement system (page 1 , paragraph 7; page 2,
paragraph 38; page 3, paragraphs 40 and 47).

Regarding claim 17, Blackman discloses the apparatus wherein said storage
device further stores an agreement information database (page 3, paragraph 40).

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Art Unit: 3692

Regarding claim 18, Blackman discloses the apparatus further comprising a
communication device coupled to said processor and adapted to communicate with at
least one of: (i) a client device, (ii) an agreement modeling system controller, (iii) a
satellite system, and (iv) a counter-party device (page 2, paragraph 38).

Response to Arguments

Applicant has argued that the references do not disclose determining an
agreement scope, document scope, and a fact set scope, placing the scopes in a scope
stack, and evaluating the scope stack via an evaluation engine to produce a result in
accordance with a rule. However, Examiner cites as shown in the current claim 1
rejection in the present Office Action that Blackman discloses determining agreement,
document and fact set scopes as information is gathered and addressed in the
development of agreements. Blackman does not disclose the use and evaluation of a
scope stack, hence this portion of the claim was, in the previous Office Action, and is, in
the current Office Action, rejected by Perl, The use of scope stacks is old and well
known in the field of computer evaluation and programming, as disclosed by Perl. The
use of such a technique would be obvious in evaluating the parameters of generating an
agreement and the factors affecting such generation.

Conclusion

Applicant's amendment necessitated the new ground(s) of rejection presented in
this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP

Application/Control Number: 09/929,184 Page 1 1

Art Unit: 3692

§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
CFR 1.136(a).

A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within
TWO MONTHS of the mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory period, then the
shortened statutory period will expire on the date the advisory action is mailed, and any
extension fee pursuant to 37 CFR 1 .136(a) will be calculated from the mailing date of
the advisory action. In no event, however, will the statutory period for reply expire later
than SIX MONTHS from the date of this final action.

Any inquiry concerning this communication should be directed to Jennifer
Liversedge whose telephone number is 571-272-3167. The examiner can normally be
reached on Monday - Friday, 8:30 - 5 PM.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Richard Chilcot can be reached at 571-272-6777. The fax number for the
organization where the application or proceeding is assigned is 571-273-8300.

Information regarding the status of an application may be obtained from the
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Status information for unpublished applications is available through Private PAIR only.
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Application/Control Number: 09/929,184 Page 12

Art Unit: 3692

you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free).

Jennifer Liversedge

Examiner

Art Unit 3692